Hoffmann-La Roche Inc. v. Jery Melon

Case No. D2012-0302

1. The Parties

2. The Domain Name and Registrar

The disputed domain name <buyaccutanenoprescription.net> is registered with Todaynic.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2012, Todaynic.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012

The Center appointed Michel Vivant as the sole panelist in this matter on March 29, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant holds the trademark ACCUTANE registered with the United States Patent and Trademark Office as of August 28, 1973 (registration No 966,924), with a first use in 1982. He also owns the domain name <accutane.com>.

The disputed domain name <buyaccutanenoprescription.net> was registered by the Respondent with Todaynic.com, Inc. on January 4, 2012.

Consequently, the Complainant filed a Complaint against the Respondent in February 2012.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Respondent’s domain name <buyaccutanenoprescription.net> incorporates the Complainant’s trademark ACCUTANE and that it is sufficient to establish that it is confusingly similar to that trademark.

It asserts that it has exclusive rights to the trademark ACCUTANE and that the Respondent, who has no rights to use the word Accutane, uses Accutane in the disputed domain name in order to “capitalize on the fame of the Complainant’s mark” and to direct consumers through the disputed domain name to on-line-pharmacies.

Finally, it advances that the Respondent registered the disputed domain name in bad faith because the Respondent would have been aware of the well-known trademark ACCUTANE and registered it in order “to attract users to the Respondent’s website, by creating a likelihood of confusion with the Complainant well-known mark”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel finds that the Complainant has trademark rights in ACCUTANE. If it is obvious that the disputed domain name is not identical to the trademark, the question is whether the disputed domain name <buyaccutanenoprescription.net> can be said to be confusingly similar to the trademark with reference to paragraph 4(a)(i) of the Policy.

Unquestionably, the disputed domain name incorporates the trademark ACCUTANE. The question is whether this incorporation creates a confusing similarity as required by the Rules. Precedent cases give a positive answer. In a case where the disputed domain name was <buyaccutane.net>, the panel decided: “The addition of the term “buy” as a prefix to the ACCUTANE mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The prefix “buy” is an ordinary descriptive word which is related to the trademark ACCUTANE and may lead Internet users to understand the Disputed Domain Name as hosting a website that offers for sale the Complainant’s product. Adding the prefix “buy” to the Mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE and the Complainant, and therefore increases the risk of confusion” (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240). The present Panel fully agrees with this analysis.

In another case, where the disputed domain name was <noprescriptionaccutane.com>, the panel decided in similar terms: “In the view of the Panel, “accutane” is very clearly the dominant part of the disputed domain name and the combination of that dominant part with the mainly descriptive word (or words) “nonprescription” does not in any important manner change the significance of the disputed domain name, the more so as Accutane products and treatments are clearly of a pharmaceutical character to be sold and used according to prescription procedures. The disputed domain name is consequently clearly dominated by its principal component which is “accutane” and thus offers a distinct similarity with the trademark” (Hoffmann-La Roche Inc. v. Ruler-Domains, Sergey Ryabov,WIPO Case No. D2010-1077).

Of course, in the present case, there are two additions: the prefix “buy” and the suffix “noprescription”. However, the idea remains that the dominant part of the disputed domain name is “accutane” and that “buy” and/or “noprescription” reinforces the link with the trademark ACCUTANE.

Accordingly, the disputed domain name must be considered as confusingly similar to the Complainant’s trademark, according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant, who has rights on the trademark ACCUTANE, never gave a license to the Respondent who seems to use the disputed domain name in order to direct consumers to on-line pharmacies. In this Panel’s view, this is an obvious illegitimate practice aiming to “capture” customers, by – as the Complainant contends – “capitalizing on the fame of the Complainant’s mark.”

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The registration of the disputed domain name <buyaccutanenoprescription.net> with the manifest intent to redirect consumers to on-line pharmacies is an obvious registration made in bad faith.

The effective use of the disputed domain name in the pursued aim on the economic model of parasitism, is undoubtedly use in bad faith. It is nothing else than that of an attempt to attract Internet users for financial purposes as per paragraph 4b(iv). .

As such, for the Panel, the requirement of paragraph 4(a)(iii) of the Policy is undoubtedly also satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buyaccutanenoprescription.net> be transferred to the Complainant.